Ex Parte Kallin et al

Patent Trial and Appeal Board

Dec 4, 2014

12004354 (P.T.A.B. Dec. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FREDRIK L.N. KALLIN and ROBERT J. ROSS
____________

Appeal 2013-000970
Application 12/004,354
Technology Center 2800
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Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1–6 as unpatentable over
Tetsuo (JP 07-315668, published Dec. 5, 1995) in view of Michihira et al.
(US 5,094,115, issued Mar. 10, 1992). We have jurisdiction under
35 U.S.C. § 6.

We AFFIRM.
Appeal 2013-000970
Application 12/004,354

2
Appellants claim a document diverter apparatus for use in a check
processing module 60 of a self-service check depositing terminal 10, the
apparatus comprising a first member (i.e., diverter blade) 120 and a second
member (i.e., detent arm) 150 (independent claim 1, Figs. 1–3, 5, and 9; see
also independent claims 5 and 6).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A document diverter apparatus for use in a check processing
module (CPM) of a self-service check depositing terminal, the apparatus
comprising:
a first member which can be (i) moved between a first position and a
second position when the CPM is configured to operate in a first mode of
operation, (ii) moved between the second position and a third position when
the CPM is configured to operate in a second mode of operation, and (iii)
constrained to be in the second position when the CPM is configured to
operate in a third mode of operation; and
a second member which can be (i) disposed in a first position to
configure the CPM to be operated in the first mode of operation, (ii)
disposed in a second position to configure the CPM to be operated in the
second mode of operation, and (iii) disposed in a third position to configure
the CPM to be operated in the third mode of operation.

Appellants do not separately argue the claims under rejection (see Br.
4–5). Therefore, the claims will stand or fall with representative claim 1.

We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer. The following comments are added for
emphasis.
Appeal 2013-000970
Application 12/004,354

3
Appellants first argue that "[i]n Tetsuo, there is no need to create a
precise determination of the actual position of the branching claw device 20"
(id. at 4) and accordingly that "there is no reason or motivation to modify the
branching claw device 20 of Tetsuo to include the detent mechanism 33 of
Michihira" (id.). However, Appellants proffer no evidence in support of
their contention that the Tetsuo apparatus has no such need. In any event, an
artisan would have modified Tetsuo to include the detent mechanism of
Michihira in order to obtain the benefits described by the Examiner (Ans. ¶
bridging 7–8). We emphasize that Appellants do not challenge the
Examiner's position concerning such benefits (i.e., no Reply Brief has been
filed).

Appellants' second argument that "the Office does not explain how the
branching claw device 20 . . . of Tetsuo would be modified with the detent
mechanism 33 of . . . Michihira" (id. at ¶ bridging 4–5) is undermined by
their subsequent quotation of the Examiner's obviousness conclusion which
explains how Tetsuo would be so-modified (i.e., "by attaching the switch
member [of Michihira] as a base plate to the [Tetsuo] branching claw
coaxially to create a precise determination of the actual position of the
branching claw" (id. at 5 quoting Final Action 3)). This point is further
embellished by the Examiner (Ans. 8–9) which Appellants do not
specifically contest on this record .

Finally, we perceive no convincing merit in Appellants' third
argument that "Tetsuo is already configured to three modes of operation"
(Br. 5) and "[a]ccordingly, there would be no reason or motivation to modify
Appeal 2013-000970
Application 12/004,354

4
Tetsuo in view of Michihira" (id.). As persuasively explained by the
Examiner:
While Tetsuo is already configured for three modes of
operation, it only did so with only one member and without the
benefit of precisely determining the actual position of the
branching claw device. The modification provides configuring
for three modes with respective positions for a first and second
member along with the benefits above.

(Ans. 10.) Appellants do not specifically dispute the Examiner's
explanation.

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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